25th Aug 2008
National Arbitration Forum
Mycrib, Inc. v. KB c/o Katarzyna Bieniek
Claim Number: FA0806001211136
Complainant is Mycrib, Inc. (“Complainant”), represented by Brian A. Hall, Michigan, USA.Respondent is KB c/o Katarzyna Bieniek (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mycrib.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 20, 2008.
On July 1, 2008, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <mycrib.com> domain name is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that the Respondent is the current registrant of the name.Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on July 23, 2008.
An Additional Submission was received from Complainant on July 29, 2008 without the required fee; therefore the National Arbitration Forum does not consider it to be in compliance with the National Arbitration Forum’s Supplemental Rule 7.
Because the National Arbitration Forum determined that the Additional Submission did not comply with Rule 7, it was not considered by the Panel in making its decision.
On July 31, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Louis E. Condon, Diane Cabell, and Bruce E. Meyerson as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Rights in the MYCRIB mark (Reg. No. 3,208,096 issued February 13, 2007, filed February 9, 2006), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant also claims that, though the disputed <mycrib.com> domain name was initially registered in 2001, the instant Respondent did not acquire the disputed domain name until September 8, 2007.Its business at its <mycrib.net> domain name consists of a social networking website, which commenced in early 2006.Complainant submits evidence demonstrating that it has received 67,000 unique visitors worldwide, and that its domain name and corresponding website is ranked as one of the top 35,000 websites.Complainant argues that it has expended resources to build its goodwill, and that it has 70,000 members using its networking operation.That the <mycrib.com> domain name is identical to its MYCRIB mark, regardless of the fact that the disputed domain name adds the generic top-level domain (“gTLD”) “.com.”
Complainant has only a “design plus mark,” meaning that Complainant does not have rights in the text of the mark alone.
C. Additional Submissions
Did not comply with Rule 7 and therefore, not considered by the Panel.
A majority of the panelists find that the elements of Complainant’s design mark sufficiently distinguish it from the underlying text such that the domain is not identical or confusingly similar.Even if one accepts that Complainant may have established common law rights in the text, Complainant has not established evidence of worldwide fame at the time of the current registration of the domain name such as to cause the Respondent, who resides in Poland, to desire to trade on Complainant’s mark with bad faith intent.Respondent has simply continued to use the domain for the same purposes as it was used by prior registrants.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith.
Since the Complainant failed to establish one of the three key elements under ICANN rules and policy, it is not necessary for the Panel to consider or rule on the other elements.
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Louis E. Condon, Panelist
Dated: August 25, 2008
Diane Cabell, Panelist
Dated: August 25, 2008
I respectfully disagree with my colleagues. I would hold that the Complainant has established that the domain name is confusing similar to its mark because unlike decisions relied upon by the Respondent, in this case, the USPTO registration does not limit Complainant’s use of the terms “my crib” to the context of the stylized mark itself.Although Complainant allowed its ownership of the domain name to lapse at one point, the rights in its mark precede the current registration of the domain name by Respondent.Finally, although link sites are indeed legitimate uses, here the Respondent’s site offers services in apparent direct competition with those offered by Complainant.
I would order that the domain name be transferred.
Bruce E. Meyerson, Panelist
August 25, 2008
National Arbitration Forum